The Municipal Court in Prague stated in Decision 9Ca 68/2003-36 that use of a trade mark includes not only direct use of a mark through placing on products or packaging, but also indirect use in connection with those products or services, for example on accompanying documents or advertising. In this decision the Municipal Court refused an action against the decision of the President of the Industrial Property Office concerning the cancellation of a trade mark due to non-use.

The final decision of the President of the Industrial Property Office confirmed the first instance decision of the trade mark department. The trade mark department refused the proposed cancellation on the grounds of non-use of the trade mark 113067 Budweiser Bier Budrau.

The decision of the President of the Office was appealed in a suit before the Municipal Court in Prague. The suit stated – among other things – that a trade mark requires the existence of a product indicated by the trade mark. No beer existed under the trade mark in question. The plaintiff admitted that indirect use of a trade mark is possible but did not consider that the use of the trade mark on a reservation stand or in the advertising on packaging (in this case on packaging for glasses) was sufficient evidence of indirect use. The plaintiff stressed that indirect use of a trade mark was only exceptional and therefore it had to be considered as excluded.

The Municipal Court in Prague refused the suit and confirmed the decision of the Industrial Property Office. Contrary to the plaintiff's assumption, it was stated that a trade mark had not necessarily to indicate one concrete product. It is sufficient if the trade mark distinguishes products of one entrepreneur from products of another entrepreneur. If that were not the case, trade marks denoting owners producing more than one product would not be allowable (for example Canon, Minolta).

The Court also stated that use of a trade mark includes not only its direct use (placing the trade mark on products or packaging) but also indirect use connected with registered products or services, for example on accompanying documents and advertisements. If the owner of the contested trade mark did not show evident and continued interest in his trade mark for the past five years and also did nothing to prove his intention to use the trade mark, only then could the proposal to cancel the trade mark due to non-use be successful.

The Court further stated that beer was a special product as it is not possible to place any denomination directly on the beer. The trade mark must therefore be placed on any packaging, usually a bottle. A considerable amount of beer production is not filled in bottles or other packages, but is delivered to restaurants in barrels or tankers and so it is not in direct contact with consumers. In such a case the immediate packaging of the product is the glass in which the beer is served. Glasses can be without any denomination. It is therefore quite logical that the trade mark of the manufacturer of beer will be used on other objects connected with selling or consummating beer, such as advertising, posters, spigots, napkins and reservation stands on tables in restaurants. In this case therefore the placing of the mark on advertising which has direct connection with the protected products – beer – was considered to be sufficient use of the trade mark.

Jan Hák